IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`MIDLAND/ODESSA DIVISION
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`CLAIM CONSTRUCTION MEMORANDUM AND ORDER
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`MO:23-CV-00077-ADA
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`RESONANT SYSTEMS, INC., d/b/a
`RevelHMI,
`Plaintiff,
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`
`v.
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`APPLE, INC.,
`Defendant.
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`
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`Before the Court are the parties’ claim construction briefs. Plaintiff Resonant Systems, Inc.,
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`d/b/a Revel HMI submitted its Complaint for Patent Infringement on June 1, 2023 (ECF No. 1).
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`Defendant Apple, Inc. submitted the opening Markman Brief on March 21, 2024 and its Reply
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`Brief on April 25, 2024 (ECF Nos. 75 and 82, respectively). Resonant submitted its Response on
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`April 11, 2024 and its Sur-reply on May 10, 2024 (ECF Nos. 79 and 84, respectively). The Court
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`held a Markman hearing on May 31, 2024. (ECF No. 88). The Court provides this memorandum
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`in support of its Claim Construction Order issued on June 6, 2024 (ECF No. 91), and hereby
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`incorporates-by-reference
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`the claim construction hearing and
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`transcript as well as
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`the
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`demonstrative slides presented by the parties during the hearing. See Phillips v. AWH Corp., 415
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`F.3d 1303, 1314 (Fed. Cir. 2005) (en banc); see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 135
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`S. Ct. 831, 841 (2015).
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`Ex. 3001
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`

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`BACKGROUND
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`
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`Resonant Systems, Inc. asserts that Apple, Inc. infringes claims of United States Patent
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`Nos. 8,093,767, 8,860,337, 9,941,830, and 11,15,882. Resonant asserts claims 1–5 of the ’767
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`patent; claims 2 and 3 of the ’337 patent; claims 1–8, 14–17, 19, and 20 of the ’830 patent; and
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`claims 1–6, 10, 17, 19, and 20 of the ’882 patent.
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`The asserted patents describe “linear-resonant vibration module[s],” “linear vibration
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`modules and linear-resonant vibration modules,” and an “oscillating-resonant-module controller.”
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`See ECF No. 1. The parties have agreed that (1) the preambles are limiting in claim 1 of the ’767
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`patent; claims 1 and 20 of the ’830 patent; and claims 1 and 10 of the ’882 patent; (2) the “control
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`component . . .” limitations in three of the four asserted patents should be construed as means-
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`plus-function terms and given their agreed-upon function, and (3) the “driving component . . .”
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`limitations should be construed as means-plus-function limitations and given their agreed-upon
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`function and corresponding structure. The parties dispute (1) whether the term “control component
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`. . .” in the ’767 patent is a means-plus-function term in claim 1, (2) the appropriate corresponding
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`structure for “control component . . .” when claimed as means-plus-function, (3) whether fourteen
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`claims are indefinite, and (4) whether two claims should be rewritten.
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`I.
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`General principles
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`LEGAL PRINCIPLES
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`The general rule is that claim terms are generally given their plain-and-ordinary meaning.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); Azure Networks, LLC v.
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`CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014), vacated on other grounds, 575 U.S. 959, 959
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`(2015) (“There is a heavy presumption that claim terms carry their accustomed meaning in the
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`relevant community at the relevant time.”) (internal quotation omitted). The plain-and-ordinary
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`2
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`Ex. 3001
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`

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`meaning of a term is the “meaning that the term would have to a person of ordinary skill in the art
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`in question at the time of the invention.” Phillips, 415 F.3d at 1313.
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`The “only two exceptions to [the] general rule” that claim terms are construed according
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`to their plain-and-ordinary meaning are when the patentee (1) acts as his/her own lexicographer or
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`(2) disavows the full scope of the claim term either in the specification or during prosecution.
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`Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The Federal
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`Circuit has counseled that “[t]he standards for finding lexicography and disavowal are exacting.”
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`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). To act as his/her own
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`lexicographer, the patentee must “clearly set forth a definition of the disputed claim term” and
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`“‘clearly express an intent’ to [define] the term.” Thorner, 669 F.3d at 1365.
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`“Like the specification, the prosecution history provides evidence of how the PTO and the
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`inventor understood the patent.” Phillips, 415 F.3d at 1317. “[D]istinguishing the claimed
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`invention over the prior art, an applicant is indicating what a claim does not cover.” Spectrum Int’l,
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`Inc. v. Sterilite Corp., 164 F.3d 1372, 1379 (Fed. Cir. 1998). The doctrine of prosecution disclaimer
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`precludes a patentee from recapturing a specific meaning that was previously disclaimed during
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`prosecution. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). “[F]or
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`prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or
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`statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. Accordingly,
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`when “an applicant’s statements are amenable to multiple reasonable interpretations, they cannot
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`be deemed clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315,
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`1326 (Fed. Cir. 2013).
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`A construction of “plain and ordinary meaning” may be inadequate when a term has more
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`than one “ordinary” meaning or when reliance on a term’s “ordinary” meaning does not resolve
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`3
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`Ex. 3001
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`

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`the parties’ dispute. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed.
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`Cir. 2008). In that case, the Court must describe what the plain-and-ordinary meaning is. Id.
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`“Although the specification may aid the court in interpreting the meaning of disputed claim
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`language . . . , particular embodiments and examples appearing in the specification will not
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`generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571
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`(Fed. Cir. 1988). “[I]t is improper to read limitations from a preferred embodiment described in
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`the specification—even if it is the only embodiment—into the claims absent a clear indication in
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`the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co.
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`v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`An applicant’s statements during the PCT prosecution may also indicate the scope of the
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`invention. See Caterpillar Tractor Co. v. Berco, S.P.A., 714 F.2d 1110, 1116 (Fed. Cir. 1983)
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`(stating that when instructions to foreign counsel or representations to foreign patent offices made
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`by an applicant during prosecution of a corresponding foreign application provide “relevant
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`evidence” with respect to claim interpretation, such information “must be considered.”); see also
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`Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (finding that the
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`applicant’s own statements made before the European Patent office support the court’s holding).
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`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record in
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`determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). Technical
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`dictionaries may be helpful, but they may also provide definitions that are too broad or not
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`indicative of how the term is used in the patent. Id. at 1318. Expert testimony may also be helpful,
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`but an expert’s conclusory or unsupported assertions as to the meaning of a term are not. Id.
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`II.
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`Claim differentiation
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`4
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`Ex. 3001
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`Under the doctrine of claim differentiation, a court presumes that each claim in a patent
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`has a different scope. Phillips, 415 F.3d at 1314–15. The presumption is rebutted when, for
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`example, the “construction of an independent claim leads to a clear conclusion inconsistent with a
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`dependent claim.” Id. The presumption is also rebutted when there is a “contrary construction
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`dictated by the written description or prosecution history.” Seachange Int’l, Inc. v. C-COR, Inc.,
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`413 F.3d 1361, 1369 (Fed. Cir. 2005). The presumption does not apply if it serves to broaden the
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`claims beyond their meaning in light of the specification. Intell. Ventures I LLC v. Motorola
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`Mobility LLC, 870 F.3d 1320, 1326 (Fed. Cir. 2017).
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`III. Whether the Preamble is limiting
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`Courts presume that the preamble does not limit the claims. Am. Med. Sys., Inc. v. Biolitec,
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`Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). But “[i]n general, a preamble limits the invention if it
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`recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the
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`claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
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`(quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)).
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`“Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention
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`in the claim body and uses the preamble only to state a purpose or intended use for the invention.’”
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`Catalina Marketing International, Inc., 289 F.3d at 808 (quoting Rowe v. Dror, 112 F.3d 473, 478
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`(Fed. Cir. 1997)). The Federal Circuit has provided some “guideposts” regarding whether the
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`preamble is limiting: (1) preamble provides antecedent basis, (2) preamble is essential to
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`understand limitations or terms in the claim body, (3) preamble recites “additional structure or
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`steps underscored as important by the specification,” and (4) “clear reliance on the preamble during
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`prosecution to distinguish the claimed invention from the prior art.” Id.
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`IV.
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`Indefiniteness
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`5
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`Ex. 3001
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`“[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc.
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`v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). Patent claims must particularly point
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`out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2. A claim,
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`when viewed in light of the intrinsic evidence, must “inform those skilled in the art about the scope
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`of the invention with reasonable certainty.” Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898,
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`910 (2014). If it does not, the claim fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 901.
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`Whether a claim is indefinite is determined from the perspective of one of ordinary skill in the art
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`as of the time the application was filed. Id. at 911.
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`In the context of a claim governed by § 112, ¶ 6, the claim is indefinite if the claim fails to
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`disclose adequate corresponding structure to perform the claimed functions. Williamson v. Citrix
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`Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015)–52. The disclosure is inadequate when one of
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`ordinary skill in the art “would be unable to recognize the structure in the specification and
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`associate it with the corresponding function in the claim.” Id. at 1352. Computer-implemented
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`means-plus-function claims are indefinite unless the specification discloses an algorithm to
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`perform the function associated with the limitation. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302,
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`1319 (Fed. Cir. 2012).
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`V. Means-plus-function claiming
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`A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6.1
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 (Fed. Cir. 2015). In particular, § 112, ¶
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`6 provides that a structure may be claimed as a “means . . . for performing a specified function”
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`1The America Invents Act of 2011 changed the numbering of the relevant subsection from § 112,
`¶ 6 to § 112(f). Because the substance of the subsection did not change, the undersigned will refer
`to the relevant subsection as § 112, ¶ 6 in keeping with the numeration at the time of the patent
`filing of three of the four patents—‘882 patent has a post-2013 effective filing date.
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`6
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`Ex. 3001
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`and that an act may be claimed as a “step for performing a specified function.” Masco Corp. v.
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`United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
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`The presumption is that terms reciting “means” are subject to § 112, ¶ 6. Williamson, 792
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`F.3d at 1348. But if the term does not use the word “means,” then it is presumed not to be subject
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`to § 112, ¶ 6. Id. “That presumption can be overcome, but only if the challenger demonstrates that
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`the claim term fails to recite sufficiently definite structure or else recites function without reciting
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`sufficient structure for performing that function.” Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp.,
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`948 F.3d 1342 (Fed. Cir. 2020) (internal quotations removed) (citing Williamson, 792 F.3d at
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`1349). “The correct inquiry, when ‘means’ is absent from a limitation, is whether the limitation,
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`read in light of the remaining claim language, specification, prosecution history, and relevant
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`extrinsic evidence, has sufficiently definite structure to a person of ordinary skill in the art.” Apple
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`Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014), overruled on other grounds by
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`Williamson, 792 F.3d at 1349.
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`When § 112, ¶ 6 applies, it limits the scope of the functional term “to only the structure,
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`materials, or acts described in the specification as corresponding to the claimed function and
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`equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
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`involves multiple steps. “The first step . . . is a determination of the function of the means-plus-
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`function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
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`(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
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`specification and equivalents thereof.” Id. A “structure disclosed in the specification is
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`‘corresponding’ structure only if the specification or prosecution history clearly links or associates
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`that structure to the function recited in the claim.” Id. The focus of the “corresponding structure”
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`inquiry is not merely whether a structure is capable of performing the recited function, but rather
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`7
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`Ex. 3001
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`whether the corresponding structure is “clearly linked or associated with the [recited] function.”
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`Id. The corresponding structure “must include all structure that actually performs the recited
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`function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
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`Cir. 2005). However, § 112, ¶ 6 does not permit “incorporation of structure from the written
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`description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great
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`Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
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`For § 112, ¶ 6 limitations implemented by a programmed general-purpose computer or
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`microprocessor, the corresponding structure described in the patent specification must include an
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`algorithm for performing the function, i.e., the corresponding structure is a processor and an
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`algorithm. WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). In this
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`situation, the corresponding structure is not a general-purpose computer but rather the special
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`purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs. Australia
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`Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The algorithm may be
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`described in “any understandable terms,” such as “as a mathematical formula, in prose, or as a
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`flow chart, or in any other manner that provides sufficient structure.” Function Media, L.L.C. v.
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`Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013). Federal Circuit caselaw does not require that
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`the patent describe an algorithm “if the selection of the algorithm or group of algorithms needed
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`to perform the function in question would be readily apparent to a person of skill in the art.”
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`Aristocrat Techs. Australia Pty Ltd. v. Multimedia Games, Inc., 266 F. App’x 942, 947–48 (Fed.
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`Cir. 2008).
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`Finally, § 112, ¶ 6 does not apply when the claim itself describes the algorithm. St. Isidore
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`Rsch., LLC v. Comerica Inc., No. 2:15-CV-1390-JRG-RSP, 2016 WL 4988246, at *13 (E.D. Tex.
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`Sept. 19, 2016).
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`8
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`Ex. 3001
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`VI. Correction of an error
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`A district court can only correct an error in a claim if “(1) the correction is not subject to
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`reasonable debate based on consideration of the claim language and the specification and (2) the
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`prosecution history does not suggest a different interpretation of the claims.” Novo Indus., L.P. v.
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`Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003).
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`LEVEL OF ORDINARY SKILL IN THE ART
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`It is well established that patents are interpreted from the perspective of one of ordinary
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`skill in the art. See Phillips, 415 F.3d at 1313 (“[T]he ordinary and customary meaning of a claim
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`term is the meaning that the term would have to a person of ordinary skill in the art in question at
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`the time of the invention, i.e., as of the effective filing date of the patent application.”). The Federal
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`Circuit has advised that the “[f]actors that may be considered in determining the level of skill in
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`the art include: (1) the educational level of the inventors; (2) the type of problems encountered in
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`the art; (3) prior art solutions to those problems; (4) the rapidity with which innovations are made;
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`(5) sophistication of the technology; and (6) education level of active workers in the field.” Env’tl
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`Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693, 696 (Fed. Cir. 1983). “These factors
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`are not exhaustive but are merely a guide to determining the level of ordinary skill in the
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`art.” Daiichi Sankyo Co. Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
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`Apple contends that at the time of the claimed invention for the respective Asserted Patents,
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`a person of skill in the art (“POSITA”) would have either (1) a Bachelor of Science in Mechanical
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`Engineering, Electrical Engineering, Computer Science, or an equivalent field and at least two
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`years of experience related to electronic consumer product design; or (2) have obtained similar
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`knowledge and experience through other means. Resonant contends that a POSITA at the time of
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`the invention would have a bachelor’s degree in electrical engineering, mechanical engineering,
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`9
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`Ex. 3001
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`or a comparable field of study, and at least two years of professional experience with electro-
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`mechanical control systems, or other similarly relevant industry experience. Additional relevant
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`industry experience may compensate for lack of formal education or vice versa.
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`Having considered the parties’ proposals, and the factors that may be considered in
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`determining the level of skill in the art, the Court finds that a person of ordinary skill in the art
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`would have either (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering,
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`or an equivalent field and at least two years of academic or industry experience in electronic
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`consumer product design or electro-mechanical control systems, or (2) at least two years of
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`relevant industry experience that compensates for lack of formal education.
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`THE PARTIES’ AGREED TERMS
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`
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`Before opening claim construction, the parties agreed that “(1) the preambles are limiting
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`in claim 1 of the ’767 patent; claims 1 and 20 of the ’830 patent; and claims 1 and 10 of the ’882
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`patent; (2) the “control component …” limitations in three of the four asserted patents should be
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`construed as means-plus-function terms and given their agreed-upon function, and (3) the “driving
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`component …” limitations should be construed as means-plus-function limitations and given their
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`agreed-upon function and corresponding structure.” ECF No. 75. The agreed constructions are
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`Agreed Construction
`Agreed – Preamble is limiting
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`captured in the following chart.
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`Term
`Preambles: “linear resonant vibration
`module”; “linear vibration module”;
`“vibration module”; “oscillating
`resonant module[s]”
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`U.S. Patent No. 8,093,767, Claim 1;
`U.S. Patent No. 9,941,830, Claims 1
`& 19;
`U.S. Patent No. 11,152,882, Claims 1
`& 10
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`10
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`Ex. 3001
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`“a driving component that drives the
`moveable component in each of two
`opposite directions”
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`U.S. Patent No. 8,093,767, Claim 1
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`“a driving component that drives the
`moveable component in each of two
`opposite
`directions within
`the
`housing”
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`U.S. Patent No. 8,860,337, Claim 2
`
`“a driving component that drives the
`moveable component
`to oscillate
`within the housing”
`
`U.S. Patent No. 9,941,830, Claims 1,
`19, & 20
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`
`
`
`
`Agreed - Subject to 35 U.S.C. § 112(f)
`
`Function: driving the moveable component in each of
`two opposite directions
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`Structures: coils 420, 514, 626, 1202, 1204, 1302,
`1304, 1412, 1414, 1510 (also
`shown in Figs. 16–17); electromagnets shown in Figs.
`10–11; and equivalents thereof
`Agreed - Subject to 35 U.S.C. § 112(f)
`
`Function: driving the moveable component in each of
`two opposite directions within the housing
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`Structures: coils 420, 514, 626, 1202, 1204, 1302, 1304,
`1412, 1414, 1510 (also
`shown in Figs. 16–17); stator coils of Figs. 24A, 24B, 25;
`electromagnets shown in Figs. 10–11; and equivalents
`thereof
`Agreed - Subject to 35 U.S.C. § 112(f)
`
`Function: driving the moveable component to oscillate
`within the housing
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`Structures: coils 420, 514, 626, 1202, 1204, 1302, 1304,
`1412, 1414, 1510 (also
`shown in Figs. 16–17); stator coils of Figs. 24A, 24B, 25;
`electromagnets shown in Figs. 10–11; and equivalents
`thereof
`
`
`Resonant also withdrew its allegation that Apple is infringing or has infringed claim 7 of the ‘882
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`patent and claims 1 and 4 of the ‘337 patent. ECF No. 75 at 12. Those claims are therefore no
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`longer in dispute or subject to claim construction.
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`CONSTRUCTION OF DISPUTED TERMS
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`For purposes of this order, the remaining disputes are divided into the following sections
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`(I) Preambles, (II) “Control component . . .”, (III) Indefiniteness, and (IV) Resonant’s proposed
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`terms. The disputes are addressed below, but are in essence (1) whether the term “control
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`11
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`Ex. 3001
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`component . . .” in the ’767 patent is a means-plus-function term in claim 1, (2) the appropriate
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`corresponding structure for “control component . . .” where claimed in means-plus-function format
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`in several patents, (3) whether fourteen claims are indefinite, and (4) whether two claims should
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`be rewritten.
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`I.
`
`Preambles
`
`A.
`
`The preamble of Claim 2, U.S. Patent No. ’337
`
`Disputed Term
`
`Resonant’s Proposal
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`Apple’s Proposal
`
`“Linear vibration
`module”
`
`Preamble is not limiting;
`no construction
`necessary; plain and
`ordinary meaning
`Shortly before the start of the May 31, 2024 hearing, the Court provided the parties with
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`Limiting
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`
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`the following construction for this term: Preamble is limiting.
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`i.
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`The parties’ positions
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`The parties dispute whether the preamble of ’337 patent’s claim 2 is limiting. Apple argues
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`primarily that claim 2’s preamble should be limiting because Resonant has agreed that other,
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`similar preambles are limiting. ECF No. 75 at 30–31. Along this line of thinking, Apple points out
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`that Resonant’s approach (1) contradicts Resonant’s use of “vibration module” in other preambles
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`to distinguish its invention from prior art, ECF No. 75 at 30 (citing Hearing Components, Inc. v.
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`Shure Inc., 600 F.3d 1357, 1366 (Fed. Cir. 2010), abrogated by Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 572 U.S. 898, 134 S. Ct. 2120, 189 L. Ed. 2d 37 (2014)), and (2) is incongruent
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`given “[t]he specification is replete with references to the invention as [described in the preamble],
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`including the title of the patent itself and the ‘Summary of the Invention.’” Id. (quoting Poly-Am.,
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`L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004).
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`12
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`Ex. 3001
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`Resonant argues that claim 2’s preamble does not provide antecedent basis for limitations
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`recited in the claim body and does not recite additional structure because each claim body already
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`recites a structurally complete invention. ECF No. 79 at 25 (citing Acceleration Bay, LLC v.
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`Activision Blizzard Inc., 908 F.3d 765, 770 (Fed. Cir. 2018) (“a preamble is not limiting where a
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`patentee defines a structurally complete invention in the claim body and uses the preamble only to
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`state a purpose or intended use for the invention.” (quotation marks omitted)). Resonant further
`
`argues that the preamble of ‘337’s claim 1—a similar preamble which the parties agree is
`
`limiting—provides an explicit antecedent basis for the body of that claim where the preamble in
`
`dispute here does not. Id.
`
`ii.
`
`Analysis
`
`This claim recites:
`
`2. A linear vibration module comprising:
`
` housing;
`
` moveable component;
`
` power supply;
`
` a
`
` a
`
` a
`
`
`user-input features;
`
` a
`
` driving component that drives the moveable component in each of two opposite directions
`within the housing; and
`
` a
`
` control component that controls supply of power from the power supply to the driving
`component to cause the moveable component to oscillate at a frequency and an amplitude
`specified by user input received from the user input features,
`
`wherein the control component drives simultaneous oscillation of the moveable component
`at two or more frequencies to generate complex vibration modes.
`
`’337 Patent at 16:1–16.
`
`
`
`13
`
`Ex. 3001
`
`

`

`
`
`This preamble is limiting. Looking to the entire patent for understanding of what the
`
`inventor “actually invented and intended to encompass in the claim,” Corning Glass Works, 868
`
`F.2d at 1257, the specification is “replete with references to the invention as a [“linear vibration
`
`module”], including the title of the patent itself, “Linear Vibration Modules and Linear-Resonant
`
`Vibration Modules.” See Poly-America, L.P., 383 F.3d at 1310. Indeed, the specification’s
`
`Abstract, Summary, and Detailed Description each describe the “current application [as being]
`
`directed to various linear vibration modules.” See generally ‘337 Patent. The preamble therefore
`
`states the “framework of the invention . . . [that] is fundamental to the [] invention.” On Demand
`
`Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1343–44 (Fed. Cir. 2006); see also UNILOC
`
`2017 LLC v. Verizon Commc’ns, Inc., No. 2:18-CV-00536-JRG, 2020 WL 805271, at *11 (E.D.
`
`Tex. Feb. 18, 2020), aff’d, Uniloc 2017 LLC v. Verizon Commc'ns, Inc., 846 F. App’x 914 (Fed.
`
`Cir. 2021) (“Common to these cases is that the preamble is limiting when the preamble tethers the
`
`claim to the focus of the described invention—when it provides an important aspect of the
`
`invention and that aspect is not understood solely from body of the claim.”). While it may be true
`
`that the claim body recites a structurally complete invention, as Resonant urges, the preamble does
`
`not merely state a purpose or intended use for the invention such that it would disqualify as a claim
`
`limitation. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339,
`
`1345 (Fed. Cir. 2003); Rowe, 112 F.3d at 478.
`
`
`
`
`
`
`
`iii.
`
`Court’s conclusion
`
`For the reasons described above, the Court construes the preamble of Claim 2, U.S. Patent
`
`No. ’337 as follows: Preamble is limiting.
`
`B.
`
`The preamble of Claim 20, U.S. Patent No. ’830
`
`Disputed Term
`
`Resonant’s Proposal
`
`Apple’s Proposal
`
`
`
`14
`
`Ex. 3001
`
`

`

`“Vibration module”
`
`Preamble is not limiting;
`no construction
`necessary; plain and
`ordinary meaning
`Shortly before the start of the May 31, 2024, hearing, the Court provided the parties with
`
`Limiting
`
`
`
`the following construction for this term: Preamble is limiting.
`
`i.
`
`The parties’ positions and the Court’s conclusion
`
`The parties dispute whether the preamble of claim 20 is limiting, binding up their
`
`arguments with their dispute over claim 2 of U.S. Patent No. ‘337 above. The Court, having
`
`reviewed those arguments in light of “vibration module” in claim 20 of U.S. Patent No. ‘830, sees
`
`no reason to depart from its conclusion above to find that this preamble is likewise limiting.
`
`II.
`
`“Control Component . . .”
`
`Resonant and Apple’s dispute divides into two categories. In the first, whether claim
`
`language related to “control component . . .” of ’737 patent, claim 1 is subject to § 112, ¶ 6. If so,
`
`the parties agree as to function but disagree as to structure—specifically, the construction of an
`
`algorithm as implemented by a microprocessor. In the second, the parties agree that the “control
`
`component . . .” terms of ’337 Patent, Claim 2, ’830 Patent, Claims 1, 19, & 20, ’882 Patent, Claim
`
`1, and ’882 Patent, Claim 10 are subject to 35 U.S.C. § 112, ¶ 6 and likewise agree as to function,
`
`but disagree as to structure—again, the construction of an algorithm as implemented by a
`
`microprocessor.
`
`A.
`
`‘767 Patent, Claim 1
`
`Disputed Term
`
`Resonant’s Proposal
`
`Apple’s Proposal
`
`“a control component that includes
`a microprocessor and that controls
`supply of power from the power
`supply to the driving component to
`cause the moveable component to
`linearly oscillate, the control
`
`
`
`(1) Plain and ordinary
`meaning; not subject to 35
`U.S.C. § 112 ¶ 6
`
`(2) If subject to 35 U.S.C. §
`112 ¶ 6, then:
`
`Subject to 35 U.S.C. § 112(f)
`
`
`
`15
`
`Ex. 3001
`
`

`

`component including, in addition to
`the microprocessor,
`
`
`
` a
`
` control program, stored in one of
`a separated electronic memory or
`within the processor, that is
`executed by the microprocessor to
`control operation of the linear
`resonant vibration module, and
`a switch that receives a directional
`signal d from the processor and that
`selects a corresponding direction of
`the two opposite directions in
`which the driving component
`drives the moveable component,
`the control component receiving
`output signals from sensors within
`the linear resonant vibration
`module during operation of the
`linear resonant vibration module
`and adjusting one or more
`operational control outputs of the
`control component according to the
`received output signals from the
`sensors in order that subsequent
`operation of linear resonant
`vibration module produces desired
`outputs from the one or more
`sensors corresponding to one or
`more operational control
`parameters”
`
`
`
`
`Agreed Function:
`
`controlling supply of power from the power supply to the
`driving component to cause the movable component to
`linearly oscillate; controlling operation of the linear resonant
`vibration module; receiving output signals from sensors
`within the linear resonant vibration module during operation
`of the linear resonant vibration module; and adjusting one or
`more operational control outputs of the control component
`according to the received output signals from the sensors in
`order that subsequent operation of linear resonant vibration
`module produces desired outputs from the one or more
`sensors corresponding to one or more operational control
`parameters
`
`Structure:
`a microprocessor; a switch;
`electronic memory; a control
`program that, if an algorithm
`is required, performs an
`algorithm comprising the
`following steps: (a) receive
`the value of an output signal;
`(b) compare that value to a
`different value, which could
`be a previous value; and/ (c)
`adjust one or more operational
`control outputs based on that
`comparison; and equivalents
`thereof
`See, e.g., ’767 patent at 5:15-
`48, 6:14-8:3, Figs. 5A-6, 7A-
`7C
`
`Structure:
`a microprocessor; a switch
`that receives a directional
`signal d from the processor
`and that selects a
`corresponding direction of the
`two opposite directions in
`which the driving component
`drives the moveable
`component; a control
`program, stored in one of a
`separated electronic memory
`or within the processor, that is
`executed by the
`microprocessor wherein the
`control program performs the
`algorithm shown in Figs. 7A–
`C and described at 6:15–8:3;
`and equivalents thereof
`Shortly before the start of the May 31, 2024 hearing, the Court provided the parties with
`
`the following construction for this term: Plain and ordinary meaning, not subject to means-
`
`plus-function treatment.
`
`
`
`16
`
`Ex. 3001
`
`

`

`i.
`
`Whether 35 U.S.C. § 112, ¶ 6 applies
`
`Resonant and Apple agree that the “control component . . .” term is subject to § 112, ¶ 6
`
`for three of the four asserted patents. Resonant is the holdout on ‘767 Patent, claim 1, believing
`
`this claim’s “control component . . .” term is distinguishable because it is defined in sufficient
`
`structural terms—such as a (1) “microprocessor,” a (2) “control program,” and a (3) “switch.” ‘767
`
`Patent, Claim 1; ECF No. 79 at 9 (citing Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed.
`
`Cir. 2022) (section 112(f) is inapplicable where a claim “recite[s] both a